Key considerations when choosing between a provisional and non-provisional patent application

Often during an initial patent consultation, an inventor and a registered patent attorney will address whether an initial patent filing should be in the form of a provisional patent application or a non-provisional (utility) patent application. This consideration is very fact specific and based upon a variety of considerations, including the market goals and inventive stage of the idea.

Here is a list of key considerations to review, consider and weigh when making this important choice as to what initial patent filing is appropriate to patent your idea:

1) A provisional patent filing is (at least initially) a less expensive option.

A well drafted, competent and detailed provisional patent filing ranges between $1,500.00 to $3,000.00 depending upon the complexity of the patent idea. As a guidepost, this is typically ¼ to ½ (as an approximate range) of the costs for a utility patent application. Why? Because there is no review process for a provisional patent application, and therefore there is no requirement of having formal patent drawings – as any drawings associated with a provisional patent application can be informal (including hand sketches, photographs, rough computer generated images, etc.). Apart from not requiring formal patent drawings, a provisional patent application does not have patent claims, which again define the meets and bounds (ie, the scope and/or proposed coverage) of an inventor’s idea. The less the formality and requirements, the less attorney time required to draft, and hence lower the initial legal costs.

That said, an inventor should be weary of quotes for provisional patent applications less than these amounts as this signals that a registered patent attorney will simply prepare a brief (or no) summary of patent documents received from an inventor, with little or no written disclosure drafted by the registered patent lawyer. These are often the $97.00 provisional patent applications advertised on-line found through Google searches. There have been many instances where an inventor has come to our office with a cheap provisional patent filing that they believe is fully disclosing their idea, only to learn that another patent attorney or agent has simply prepared a cover sheet, attached the inventor’s disclosure forms, and just filed the application with little or no written disclosure. These are unpleasant meetings. Most of the time, these weak patent documents have little or no value when attempting to convert an idea to a full utility patent application for review by the Patent Office.

In the end, such a very weak provisional patent application will ultimately cost and inventor more later to convert to a utility patent application – and pose a greater risk in whether that initial filing provides a true priority date of invention. As in all service industries, you ultimately get what you pay for with provisional patent applications, so the inventor should be weary in selecting a registered patent attorney that will prepare a competent, complete, and full written disclosure of the invention.

2) A provisional patent filing is a more flexible and less rigid.

Apart from the lower costs associated with a choosing a provisional patent application as an initial patent filing, a provisional patent application (as explained briefly before) has less formal requirements required by the Patent Office. Accordingly, another advantage of filing a provisional filing as an initial patent filing is that it affords more flexibility and less rigidity.

Why is that important? Because the flexibility afforded by a provisional patent may allow the attachment of an inventor’s notes, excerpts from an invention notebook, figures, informal drawings, sketches, and related rendering – with the caveat that these should be in addition to (and should merely supplement) the registered patent attorney’s written description of the invention (which should be sufficiently detailed).

In addition to the fact that a provisional patent application need not include formal patent drawings, the following requirements for a non-provisional (utility) patent application are also not required (but many are encouraged):

A description of the field of invention;

A description of the prior art or state of the art;

A background of the invention;

A summary of the invention;

A description of the drawings;

An abstract or brief overview of the invention; and

A set of patent claims.

In addition, a provisional patent application does not include a duty or obligation on the part of the registered patent attorney and inventor to disclose any known prior art references (either publishing patent applications, issued utility patent applications or printed publications) in the form of an information disclosure statement (IDS). Likewise, there is no duty or obligation for an application to identify and disclosure the known inventors – and therefore there is no inquiry that must be made by a registered patent attorney to identify each and every individual who contributed to the invention (partly because there is no obligation to include written patent claims).

Once a provisional patent application is filed, the invention may be labeled and advertised as “patent pending.” This often represents a marketing benefit as the time period of a provisional filing (which can be up to 12 months, with some options to potentially seek extension) may allow an inventor to:

(a) look for potential licensees and/or purchasers of the technology (or alternatively identify and obtain some form of joint venture partner or seek funding) with some level of protection now that there is a priority date afforded by the patent filing (although it still recommended to have a non-disclosure agreement executed), and

(b) assess and determine the financial feasibility of the invention and whether there is a market for the idea – including the costs associated with manufacture, logistics as to transport of the invention to potential buyers, identification of the target market (who will buy this thing?), the appropriate sales price for the invention, and whether that underlying margins sufficiently warrant the inventor to pursue the idea.

In short, the time period afforded by a provisional patent application provides a true benefit in seeking a manufacturer for the product, to determine the transport and logistics to get a product from the manufacturer to the storefront, and ultimately whether the inventor wants to engage in these efforts, or if its better to simply sell the idea to a third-party. Put another way, it allows the inventor to get his/her ducks in a row and determine if this is a business that they want to be in.

4) A provisional patent application allows for a priority date under the new AIA first to file rule.

Just as with a more expensive and arduous non-provisional patent application, a provisional patent application also establishes a priority date under the “first to file” patent rules enacted in March 2013 as part of the American Invents Acts (“AIA”). Again, a provisional patent application should be constructed as nothing more than one manner in which to reach the first hurdle in the race to obtain a patent grant from the United States Government. Moreover, ultimately a non-provisional patent application must be filed to obtain a U.S. patent grant. That said, the provisional patent application does allow – for a fraction of the cost – a priority date under the new patent rules.

Most commentators and registered patent attorneys agree that the new “first to file” patent rules under the AIA will escalate and further promote a larger number of provisional patent application filings. Why? Because provisional patent applications can be filed in a matter of a few days (rather than a matter of a few weeks). This is not only because provisional patent applications are more flexible, but there is no need to await a patent drawing vendor to complete figures, or for the need to prepare patent claims which often require a certain amount of time (not to mention review by the client). Hence, there is a natural tendency to seek a provisional patent application when there is a race to the U.S. Patent application to be awarded “first to file” priority.

A second reason why the fallout of the American Invents Act (“AIA”) will further promote provisional patent applications as an initial filing vehicle is that instead of delaying a patent filing to ensure that there is a market need for an invention, the new “first to file” rules will in essence promote more blind filings. Put another way, as long as there is a belief of an inventive step (the idea is new), an inventor realizing the implications of delay under the AIA should file first, ask questions later, and then subsequently determine if they want to convert a filing to a non-provisional application.

Despite all of this the AIA, as well as related opinions issued by the Federal Circuit, all require that a provisional patent application contain a written specification that is enabling – such that a person of ordinary skill in the art could make or use the invention without undue experimentation. Thus, simply preparing a few sketches on the back of a napkin or jotting down a few thoughts in an email is not going to be enough. In short, the changes under the AIA to create a first to file priority further requires that an inventor work with a registered patent attorney to prepare a sufficiently detailed written patent document for filing.

5) Filing a non-provisional patent application will short track review by the Patent Office.

While points 1 through 4 above all address benefits afforded by a provisional patent application filing, one fact is inescapable – the only way to obtain an issued patent is to file a non-provisional patent application. Accordingly to statistics, there are over 4,500 patents issued by the United States government each week. All of those are based upon ultimately on a non-provisional patent application filing. Moreover, often an inventor will file for a provisional patent application, not know there is only one year to convert, and abandon his or her priority date of invention. All of these factors should be considered when choosing whether an initial patent filing should be a provisional or non-provisional application.

6) Filing a non-provisional will allow greater ability to seek licensing or sale of the patent rights

Under the current economic climate, most potential licensees and/or purchasers of technology would rather invest in and/or purchase an issued patent application, rather than a pending utility patent application (or a provisional patent application). What is more, of those investors interested in a pending patent application, a non-provisional allows for more of a forecast of the scope of claims and therefore the scope of the invention. This especially rings true in light of the fact that non-provisional filings may have also been the subject of a first office action – which therefore allows for at least some forecast of the scope of potential claims.

Therefore, when evaluating whether to file a patent application, it is recommended that if the applicant is focused primarily on licensing or selling the technology – a non-provisional filing should be done (rather than a provisional patent application).

7) A non-provisional patent application is ultimately cheaper in the long run

As one last item of note, the filing of a non-provisional patent application (rather than a provisional patent) as an initial filing will always in the long run be cheaper and more affordable. This is because there are less filing fees, less attorney time, and less overlap in filings and preparations. Certainly, the initial outlay is less with a provisional patent application.

Therefore, if the overall cost is a factor, filing of a non-provisional (and not filing a provisional) may be the preferred route.